Peloton’s legal team has submitted a request to the Trademark Trial and Appeal Board of the US Patent and Trademark Office (USPTO) requesting that the trademark for the words “Spin” and “Spinning” be cancelled. The submitted reasons are that the terms have now become generic, and that the owners of the trademark (Mad Dogg Athletics) are “abusively enforcing” the phrase:
The terms SPIN and SPINNING are generic, and Mad Dogg should be barred from continuing to abusively enforce its improper trademark rights across the spinning industry.
Peloton then goes on to make the case that Peloton is doing this for the fitness industry in general – because Mad Dogg Athletics has threatened to sue bloggers and journalists :
For many years, countless fitness industry participants, including Peloton, have received baseless cease-and-desist letters from Mad Dogg and its lawyers threatening expensive litigation if all uses of the terms SPIN and SPINNING are not halted. Indeed, Mad Dogg’s founder, John Baudhuin, publicly admits that Mad Dogg spends “hundreds of thousands of dollars a year” policing its purported trademarks and chasing down infringers. As detailed below, even bloggers and journalists have received cease-and-desist letters from Mad Dogg baselessly seeking to halt their use of the terms SPIN and SPINNING.
Ironically, Peloton has been reported in the press to employ some of the same techniques with enforcement of their trademarked phrase “Peloton.” One high profile case was at the end of 2018, when Peloton threatened cycling YouTuber Shane Miller over trademark infringement for a segment called “Digital Peloton News” used when he was covering professional cycling. After Miller replied that the argument was pointless as he was covering cycling, Peloton dropped their threats – “Given these representations, and as long as the circumstances do not change, our client considers the matter to be resolved.”
Peloton spends most of the filing pointing out news articles and posts where it appears the phrases spin and spinning have become generic, including some who specifically mentioned Mad Dogg Athletics
In August 2015, the online outlet TechDirt, in reporting on Mad Dogg’s trademarks on spin and spinning, wrote, “Much like other types of workout classes, nobody sees spinning as a source identifier any longer. Nobody thinks of Mad Dogg Athletics. Hell, most
people haven’t even heard of MDA…The term spinning is generic. It just is.”
One interesting note in the filing is that Peloton was requested to remove one of their advertisements last year due to pressure from Mad Dogg Athletics.
Peloton was one of the many victims of Mad Dogg’s improper campaign. In fact, just two weeks before Christmas 2020, Mad Dogg demanded that Peloton remove a video from its YouTube site that showcased a group of Peloton members, self-described as “black women physicians” who love spinning on their Peloton bikes and who call themselves the “Mocha Spin Docs.” Mad Dogg objected because the word “spin” was used.
Peloton still has a video on their YouTube channel titled “Peloton Member Stories | Mocha Spin Docs” which can be viewed here – it’s not immediately clear if the threat applied to that video, or a different one.
The original “Spin” trademark was originally filed on January 30th, 2001 with Registration number 2424295. The cancellation request was formally filed yesterday, February 16th, 2021 and has the request number 92076463.
The tentative dates laid out in the filing mean we might not see a resolution until the end of 2022, if not later. Here are the proposed dates if the argument makes it to trial:
- Time to Answer 3/28/2021
- Deadline for Discovery Conference 4/27/2021
- Discovery Opens 4/27/2021
- Initial Disclosures Due 5/27/2021
- Expert Disclosures Due 9/24/2021
- Discovery Closes 10/24/2021
- Plaintiff’s Pretrial Disclosures Due 12/8/2021
- Plaintiff’s 30-day Trial Period Ends 1/22/2022
- Defendant’s Pretrial Disclosures Due 2/6/2022
- Defendant’s 30-day Trial Period Ends 3/23/2022
- Plaintiff’s Rebuttal Disclosures Due 4/7/2022
- Plaintiff’s 15-day Rebuttal Period Ends 5/7/2022
- Plaintiff’s Opening Brief Due 7/6/2022
- Defendant’s Brief Due 8/5/2022
- Plaintiff’s Reply Brief Due 8/20/2022
- Request for Oral Hearing (optional) Due 8/30/2022
You can find the full legal cancellation request made here.
Peloton has another legal battle with Mad Dogg Athletics (whose trademark is the one Peloton is trying to cancel) currently ongoing. Last December, Mad Dogg Athletics filed suit against Peloton in Texas alleging that Peloton had infringed on a number of their patents. However, that suit did not allege that Peloton was infringing on their trademarked terms – only their patents. It’s not clear if Peloton intendeds to use these new court proceedings as leverage or a bargaining chip in their patent suit.